Trademark Paralegal

Company / Location Information

We are one of the leading manufacturers of water heating and water treatment technologies in the world. We are a $3.5 billion company with 140+ years history and we employ more than 12,000 individuals globally who pride themselves on providing the world with innovative water technology. We are committed to Continuous Improvement, not just in our factories or processes, but in our people.

Primary Function

As a member of the A. O. Smith corporate legal team, the incumbent will manage the trademark and brand protection activities for the North American and International business units, as well as provide paralegal support to other legal practice areas including patents, litigation, and compliance.

Responsibilities

• Maintain comprehensive trademark database and docket all pertinent deadlines

• Coordinate with business teams, in-house attorneys, and outside counsel to ensure that all prosecution actions, renewal deadlines, and other matters are handled in a timely manner

• Perform and/or oversee trademark clearance searches and analyze search results to provide actionable legal advice to the business units

• Advise internal teams on trademark usage guidelines and ensure compliance with usage requirements

• Oversee monitoring of trademark infringement and counterfeiting, and direct the protection of our marks through url takedowns, cease-and-desist notices, and other enforcement actions

• Assist IP attorney with patent portfolio management, docketing patent deadlines, preparing assignments, declarations, and powers of attorney, and other patent administration tasks.

Qualifications

• Bachelor's degree

• Minimum 5-8 years' experience as a trademark paralegal, or a similar support role in a law firm or corporate legal departmen

ADDITIONAL QUALIFICATIONS:

• Paralegal certificate

• Experience as a patent paralegal or administrator

• Experience with Microsoft SharePoint

• Experience performing third party due diligence

Education

Bachelor's Degree in Related Field